Our experience covers a full range of patent, trademark, and general intellectual property matters, including: intellectual property counseling and patent portfolio development; patent preparation, filing and prosecution before the U.S. Patent Office for domestic and foreign companies; patent filing and prosecution in foreign countries; patent enforcement; trademark procurement; trademark enforcement; and licensing and transactional matters.
Intellectual Property Counseling and Patent Portfolio Development
We can assist in the protection of a client’s technology, in all areas of intellectual property, and in particular in the acquisition of patents and the enforcement of patent rights. We provide general patent counseling and advice. We have extensive experience in portfolio management for U.S. and foreign clients with large patent portfolios, and also with the management of more modest portfolios. We also provide general intellectual property services including the related areas of trade secrets, trademarks and copyrights.
Patent Preparation, Filing and Prosecution in the U.S. for Domestic and Foreign Clients
We prepare and prosecute US and international applications for domestic and foreign-based clients. We prepare and prosecute U.S. patent applications and their international counterparts (through the PCT or direct regional or national filings) across a broad range of technologies. We have degrees in electrical engineering with directly applicable work experience to understand our clients’ technologies. A list of representative technologies in which we have substantial application drafting and prosecution experience, is provided at this website.
We are experienced in conducting in person or telephone interviews with Patent Examiners to aid in prosecution. We actively interview and prosecute applications after consulting with our clients to determine their desired outcome. We maintain close communication with my clients during prosecution to keep them informed of the progress of their application, and we can work together with our clients to produce a desired result while prosecution is active.
We have extensive experience in preparing and filing applications in the U.S. that were first filed abroad. We are experienced with representing Asian and European-based companies, as well as other foreign-based and multi-national companies. Our in-depth understanding of the technology provides a vital advantage when reviewing the application for language usage, technical accuracy and revising the application to conform with U.S. practice.
Patent Filing and Prosecution in Foreign Countries
International cases based on first filed U.S. patents are handled through a network of foreign counsel, selected by us, whom we oversee and direct in various prosecution efforts. As a result of our extensive experience handling international patent and trademark matters, we have developed a worldwide network of some of the best intellectual property lawyers in foreign jurisdictions to handle patents filed abroad. These foreign attorneys regularly assist us in all aspects of Intellectual Property work, as well as in related corporate matters. We monitor and work with foreign counsel to ensure that our client’s objectives in obtaining patent prosecution are met in foreign countries.
We help clients avoid problems or respond to challenges asserted against them, especially with regard to alleged patent infringement. In particular, we provide validity and non-infringement evaluations, formal opinions, and pre-litigation analysis of claims to help clients determine the strength of their position.
We help clients with all stages of trademark selection. We can provide counseling to help you select a strong trademark that is easily registered with the trademark office. Some names are more distinctive are easier to register as a trademark than others. Early counseling can help you with your branding efforts, before money is spent developing a trademark that is unsuitable for registration. Or if you are already using a trademark we can help you with the registration and prosecution of your mark.
Trademark Filing and Prosecution in the U.S. for Domestic and Foreign Clients
Up front, we often work with clients in choosing a mark that fits their business needs, whether it is a more easily registered design trademark, or a broader “word” trademark, or both. Some clients prefer to initially register a design trademark and later file a “word” trademark. Some do both right away. We can help you decide which approach is right for you. We can also counsel and help you with the registration of domain names and tag lines if determined appropriate. We also work with you to establish a description of goods and services for submission with your application that will aid in obtaining successful registration.
We work with clients who seek to register a trademark for their established business, and those who are looking to do business under one or more possible trademarks. If through a preliminary search process, we determine that filing for registration is advisable we will take care of preparing and filing the application and getting it through the examination process to registration.
Trademark Filing and Prosecution in Foreign Countries
We help clients seeking to establish trademark registrations in foreign countries and regions. Normally, trademarks are filed and registered on a country-by-country basis. Alternatively, regional filings are possible, such as in the European Union. We work with our trusted network of foreign trademark agents to procure foreign registrations.
Finally we are experienced in filing pursuant to the Madrid Agreement. The Madrid Protocol is the largest worldwide common filing allowing U.S. Registrants to register their trademark in more than 50 different countries throughout the world.
Once a trademark registration is granted, we keep the file open as long as the trademark is “live”. We work with our clients in maintaining their marks in good standing throughout the Trademark’s life. In addition we endeavor to work with our clients to make sure the trademark we registered sometime in the past still meets our client’s needs. Since the range of client’s goods and services may change over time we will help you update your registration to cover your current range of goods and services, and to update your trademark if needed.
When clients become aware of possible infringement of their trademark we are experienced in sending “cease and desist” letters to enforce their rights. In addition we may engage a trademark watch service to monitor possibly infringing uses of our clients trademarks, and then proceed with any needed enforcement, which may include opposing their registration, ordering them to cease and desist, or negotiating a license, even if it is a royalty free license.
Licensing and Transactional Matters
We represent clients in intellectual property and transactional matters such as confidentiality agreements, nondisclosure agreements, and intellectual property licensing. We prepare these agreements and also counsel clients in the ramifications associated with entering into these agreements.
The firm has experience conducting due diligence investigations related to the transfer of intellectual property and the evaluation of the merits of intellectual property protection.